DECISION

 

Henry Schein, Inc. v. YongWan Ji

Claim Number: FA2311002071707

 

PARTIES

Complainant is Henry Schein, Inc. ("Complainant"), represented by Emily Stein of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is YongWan Ji ("Respondent"), South Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <henryschein.org> ("Domain Name"), registered with Megazone Corp., dba HOSTING.KR.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 17, 2023; Forum received payment on November 17, 2023.

 

On January 2, 2024, Megazone Corp., dba HOSTING.KR confirmed by e-mail to Forum that the <henryschein.org> domain name is registered with Megazone Corp., dba HOSTING.KR and that Respondent is the current registrant of the name. Megazone Corp., dba HOSTING.KR has verified that Respondent is bound by the Megazone Corp., dba HOSTING.KR registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 5, 2024, Forum served the Complaint and all Annexes, including a Korean and English Written Notice of the Complaint, setting a deadline of January 25, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@henryschein.org. Also on January 5, 2024, the Korean and English Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default in Korean and English.

 

On January 26, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

The language of the registration agreement for the Domain Name is Korean.  The Complaint is in English and Korean and Complainant requests that pursuant to UDRP Rule 11(a) the language of the proceeding be English. 

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a formal Response, determines that the remainder of the proceedings may be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Henry Schein, Inc., has developed and sold a range of healthcare goods including pharmaceutical preparations under the HENRY SCHEIN mark since as early as 1963. Complainant has rights in the HENRY SCHEIN mark through Complainant's registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 1,612,595, registered on September 11, 1990). Respondent's <henryschein.org> domain name is identical to Complainant's HENRY SCHEIN mark as it incorporates Complainant's mark in its entirety and merely adds the ".org" generic top-level-domain ("gTLD").

 

Respondent lacks rights or legitimate interests in the <henryschein.org> domain name. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the HENRY SCHEIN mark. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as Respondent is offering the Domain Name for sale to the general public from the Domain Name's resolving website ("Respondent's Website").

 

Respondent registered and uses the <henryschein.org> domain name in bad faith. Respondent registered the Domain Name with awareness of Complainant's well-known HENRY SCHEIN mark and immediately redirected the Domain Name to a website offering itself for sale. Respondent disrupts Complainant's business as Respondent registered the Domain Name with the intent to sell the Domain Name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the HENRY SCHEIN mark.  The Domain Name is identical to Complainant's HENRY SCHEIN mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)       the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the HENRY SCHEIN mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,612,595, registered on September 11, 1990). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

The Panel finds that the <henryschein.org> domain name identical to Complainant's HENRY SCHEIN mark as it wholly incorporates the mark along with the ".org" gTLD.  Under Policy ¶ 4(a)(i), the addition of a TLD is irrelevant in determining whether a domain name and mark are identical. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs."). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the HENRY SCHEIN mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "YongWan Ji" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name presently resolves to a webpage maintained by a third party which advertises that the Domain Name is for sale for a sum in excess of any out-of-pocket costs that could have been incurred by Respondent in connection with the registration of that domain name. Absent any other explanation, this indicates that the Domain Name was registered for the purpose of selling it to a third party for profit.  Absent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Forum Jan. 17, 2014) ("Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, June 2, 2023, Respondent had actual knowledge of Complainant's HENRY SCHEIN mark.  Complainant has used the HENRY SCHEIN mark for 60 years and has a considerable reputation in the mark.  Furthermore, Respondent has not provided an explanation why it registered a domain name identical to the coined HENRY SCHEIN mark (and offered it for sale to the public) other than to take advantage of Complainant's reputation in the HENRY SCHEIN mark.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i).  See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (finding that where a respondent's only employment of a substantially identical domain name is to attempt to sell the name, there exist sufficient grounds to find the respondent registered and used the name in bad faith per Policy ¶ 4(b)(i)).  In the present case, given the nature of the Domain Name, the manner in which it has been used and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <henryschein.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: January 26, 2024